UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00047
`U.S. Patent No. 9,770,659
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Introduction. ..................................................................................................... 1 
`I. 
`II.  The ’659 Patent. ................................................................................................ 2 
`A.  The Specification Describes a Solution to a Technical Problem in a Particular
`Type of Card-Game. ............................................................................................... 2 
`B.  The Claims Recite the Solution Described in the Specification. .................... 10 
`III.  The Alleged Grounds of Invalidity Lack Evidentiary Support. ..................... 14 
`IV.  The Challenged Claims are Eligible Under § 101. ......................................... 16 
`A.  Legal Standard for Invalidity Under § 101. .................................................... 16 
`B.  The Claims are Subject-Matter Eligible. ........................................................ 18 
`1.  The ’659 patent is not directed to an abstract idea. ...................................... 18 
`2.  The claims are not abstract because they recite a sufficient level of technical
`specificity for a graphical user interface. .......................................................... 32 
`3.  The nature of the problem to be solved determines the relevance of
`aesthetic and technical benefits—and the claimed game mechanics and
`graphical user interface provide both. ............................................................... 36 
`4.  Alternatively, the claims recite the requisite “inventive concept.” .............. 38 
`5.  The limitation of “displayed as an animation” need not recite any more
`technical specificity. .......................................................................................... 46 
`C.  Petitioner’s Arguments to the Contrary are Almost Entirely Unsupported. .. 48 
`1.  Petitioner fails to analyze—or mention—all of claim 1’s limitations. ........ 51 
`2.  Claim 1 is not representative of all claims of the ’659 patent. ..................... 55 
`3.  The Petition paraphrases the dependent claims and provides no actual
`analysis. ............................................................................................................. 60 
`V.  The Claims Have Sufficient Written Description. ......................................... 61 
`A.  Legal Standard for the Written Description Requirement of § 112(a). .......... 62 
`B.  Level of Ordinary Skill in the Art. .................................................................. 63 
`C.  The ’659 Patent Contains Sufficient Written Description for the Claims. ..... 63 
`i
`
`
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`

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`1.  The specification discloses receiving the present state of a disposed panel.
` 68 
`2.  The specification discloses “allowed” and “target” divisions. .................... 69 
`3.  Panels indicating characters may be displayed as an animation. ................. 71 
`D.  The Petitioner Fails to Meet its Burden Under § 112(a). ............................... 72 
`VI.  The Claims are Definite. ................................................................................. 75 
`A.  Legal Standard for Definiteness. .................................................................... 76 
`B.  A Person of Ordinary Skill Would Understand the Scope of the Claim Terms
`at Issue. ................................................................................................................. 76 
`C.  Petitioner Fails to Meet its Burden. ................................................................ 80 
`VII.  Conclusion. ..................................................................................................... 81 
`
`
`
`
`ii
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`

`

`
`Exhibit
`No.
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`Patent Owner’s Exhibit List
`
`Exhibit Description
`
`Biography of Steven D. Moore
`Declaration of David Crane
`JP2007252696 and Machine Translation of Description
`File History of Patent Application No. 15/686268
`April 26, 2018 “Guidance on the impact of SAS on AIA trial proceedings,”
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial
`Kevin Mullet & Darrell Sano, Designing Visual Interfaces – Communication
`Oriented Techniques (1995)
`
`
`
`iii
`
`

`

`I.
`
`Introduction.
`The challenged claims of the ’659 patent are patentable. They are not
`
`directed to an abstract idea and recite an inventive concept sufficient to satisfy
`
`Alice step two. The claims are also supported and definite. Further, it is Petitioner’s
`
`burden to prove otherwise, and Petitioner has failed to do so.
`
`First, the challenged claims are not directed to an abstract idea. The ’659
`
`patent identifies a specific problem in the video game art—the failure of a
`
`particular type of video game interface to keep the interest and attention of the
`
`user. The ’659 patent discloses and claims a solution to this problem in the form of
`
`a technological improvement to graphical user-interfaces through the use of the
`
`specifically claimed panels—a graphical user-interface element with visual
`
`features integrated into a subdivided display region that was previously unknown
`
`in the art. The challenged claims recite specific and concrete limitations for
`
`selecting, disposing, displaying, and animating these panels, along with the
`
`corresponding graphical user-interface elements for doing so. The Federal Circuit
`
`has consistently found such claims patentable. But Petitioner’s analysis either
`
`ignores these limitations entirely or generalizes them to such a degree that they are
`
`rendered meaningless. And Petitioner provides almost no evidentiary support for
`
`its arguments.
`
`1
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`

`

`Second, with respect to Alice step two, the unrebutted testimony of Patent
`
`Owner’s expert, David Crane, establishes that the functions recited in the
`
`challenged claims were not well-understood, routine, or conventional. That the
`
`recited functions are executable on a general-purpose computer does not change
`
`that fact. Further, Petitioner has provided no competing evidence regarding what
`
`was well-understood, routine, and conventional in the art to a person of ordinary
`
`skill. Thus, Petitioner has failed to meet its burden under the recent Federal Circuit
`
`decision in Berkheimer.
`
`The claims are also supported and definite. Further, Petitioner’s assertions
`
`that the claims lack sufficient written description and are indefinite are, like its
`
`arguments in relation to patent eligibility, nothing more than attorney argument
`
`and fail to analyze the claims from the perspective of a person of ordinary skill.
`
`Petitioner has failed to carry its burden with respect to the challenges under § 112.
`
`The Board should find all of the challenged claims patentable.
`
`II. The ’659 Patent.
`A. The Specification Describes a Solution to a Technical Problem in a
`Particular Type of Card-Game.
`
`The ’659 patent generally discloses “a game program and a game processing
`
`method of a game in which a plurality of characters battle against each other.” Ex.
`
`1001, at 1:23-25. The ’659 patent notes, “[i]n recent years, with the spread of
`
`electronic apparatuses such as smart phones and tablets, games played on these
`
`2
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`

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`electronic apparatuses have been actively developed.” Ex. 1001, at 1:30-32. The
`
`’659 patent describes one category of such games as “card game[s] in which the
`
`user plays against other users or against the computer using cards collected in the
`
`game.” Ex. 1001, at 1:33-35. However, the ’659 patent identifies a problem in
`
`these particular types of card games, “since the use of a two-dimensional card in
`
`the battle scene is sometimes boring, there have been calls for improvement.” Ex.
`
`1001, at 1:44-46.
`
`The solution to this problem identified by the ’659 patent is a “game
`
`program and a game processing method of a game that gives a user a high visual
`
`effect.” Ex. 1001, at 1:48-49. To achieve this high visual effect, the ’659 patent
`
`explains that in one embodiment “the battle between the first and second characters
`
`proceeds in a format like a cartoon. Therefore, since the user can play the game
`
`with a sense of reading a cartoon, the visual effect that the user receives is greatly
`
`improved compared to known games.” Ex. 1001, at 7:51-55. An example of such
`
`an embodiment is provided in Figure 12.
`
`3
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`

`

`
`
`Ex. 1001, Fig. 12.
`
`
`
`In order to generate this particular user interface, the ’659 patent teaches the
`
`use of “panels to be disposed in frames of the game display screen including a
`
`battle display region.” Ex. 1001, at 5:41-43. “Preferably, these panels display a
`
`movie when the panels are emphasized and displayed.” Ex. 1001, at 8:46-48. In
`
`one example, the panels “can have an arbitrary size,” such as for example in a
`
`“battle display region 310 divided into cells” a panel may be one, two, or four cells
`
`in size. Ex. 1001, at 7:60 – 8:3. “Panels can have various shapes such as a circle,
`
`4
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`

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`a triangle, and a polygon, as well as the rectangle (including a square) such as a
`
`card in the related art.” Ex. 1001, at 8:26-28.
`
`
`
`Panels are acquired by playing the game. Ex. 1001, at 9:50-51. An
`
`exemplary game according to the ’659 patent has “a main cycle and a sub-cycle.”
`
`Ex. 1001, at 9:38-39. In a main cycle of the game, “as shown in FIG. 7, the user
`
`selects one character from a plurality of characters presented.” Ex. 1001, at 9:39-
`
`41.
`
`
`
`Ex. 1001, Fig. 7. Playing the selected character, the user “collects panels while
`
`advancing the quest.” Ex. 1001, at 9:41. “A panel can be acquired as a reward for
`
`the battle with the enemy characters and the boss character. In addition, it is also
`
`possible to acquire the panel in a specific event or the like. Thus, the user acquires
`
`the panel by advancing the game.” Ex. 1001, at 9:47-51. An example “quest” is
`
`depicted in Figure 8. Ex. 1001, at 9:44-46.
`
`5
`
`

`

`
`
`Ex. 1001, Fig. 8.
`
`
`
`In the “sub-cycle” of the game, “the user can use the acquired panel to
`
`strengthen the deck for the battle or can use the acquired panel to develop a
`
`character. Developing the character refers to combining the character selected by
`
`the user with the acquired panel.” Ex. 1001, at 9:52-56. When panels are used for
`
`character development, the panels may include “strength,” “attack,” “defense,” or
`
`“special technique effects” information to provide improvements to a user’s
`
`character for use in a battle. Ex. 1001, at 9:58-65. When panels are used to
`
`strengthen the deck, panels may include “capability information [that] refers to
`
`6
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`

`

`information including attack, defense (avoidance), attributes, recovery, and skills
`
`to disable or replace the frame, for example.” Ex. 1001, at 8:31-33.
`
`
`
`Thus, the ’659 patent explains that panels may be used for battle or character
`
`development, and are acquired by progressing through the main cycle of the game.
`
`Ex. 1001, at 9:50-54, 9:47-48. “[W]hen a battle starts, the battle using the game
`
`display screen” is performed as shown in Figures 3 and 12, for example. Ex. 1001,
`
`at 7:23-29, 10:12-13. The battle may “proceed[] from the upper left to the lower
`
`right” or vice versa in the display, and the display may “be divided by the turn
`
`indicating the unit of the progress of the battle.” Ex. 1001, at 8:18-24.
`
`
`
`7
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`

`

`Ex. 1001, Fig. 3.
`
`
`
`In this example, a “first panel group” includes “a plurality of panels that the
`
`first character possesses” and a “second panel group” includes “a plurality of
`
`panels that the second character possesses.” Ex. 1001, at 7:37-40. The panels
`
`selected from each panel group “are disposed in the frames A to G” during the
`
`battle. Ex. 1001, at 7:40-41. According to the ’659 patent, the game program may
`
`“execute the frames in a predetermined order, and emphasize and display the
`
`panels disposed in the executed frames.” Ex. 1001, at 7:45-47.
`
`
`
`Within this particular example interface, the “high visual effect” disclosed in
`
`the ’659 patent is accomplished by several different improvements. For example,
`
`panels may be sized such that the “effect of the capability is assumed to correspond
`
`to the size of the panel.” Ex. 1001, at 8:34-35, claims 6, 7. A panel can “display a
`
`still image” and “display a movie when the panels are emphasized and displayed.”
`
`Ex. 1001, at 8:37-47, claims 1, 14, 15. A “panel that is emphasized and displayed
`
`is displayed to zoom in.” Ex. 1001, at 8:67 – 9:1, claim 4. The frames in which
`
`panels are displayed may “display texts” and have “a sound effect display portion
`
`20 to display the texts showing the sound effect and/or and effect display portion to
`
`display the effect.” Ex. 1001, at 8:50-68, claim 10. Frames may have “frame
`
`portions” that are “constructed in different colors” such that “the panel of the first
`
`8
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`

`

`character and the panel of the second character can be visually easily
`
`distinguished.” Ex. 1001, at 9:3-10, claim 11.
`
`
`
`The user interface examples disclosed in the ’659 patent further impose a
`
`rule-based set of specialized game mechanics to control the flow of the battle
`
`game. For instance, in one interface, “each row indicates a turn of a battle, [and]
`
`the occupancy of action in each turn in horizontally long frames such as the frames
`
`H, N, and O, is high compared to that in horizontally short frames such as the
`
`frames I, J, K, L, and M.” Ex. 1001, at 8:4-8, claims 2-3, 9. In this manner, “a
`
`panel the size of which is larger and presents at a position where a turn number is
`
`earlier leads a battle advantageously.” Ex. 1001, at 8:14-16, claims 2-3, 9.
`
`The game outcome is ultimately determined by the arrangement of panels: a
`
`“battle result is preferably determined based on the panel information at a state
`
`where the panels are disposed,” and “it is also possible to change the battle result
`
`by changing the panel…by the operation (action for recovery or the like) of the
`
`user during the battle.” Ex. 1001, at 9:18-23, claims 5, 12. The disposition of
`
`panels within the display region may also trigger other game mechanics. For
`
`example, “when three or more specific panels are disposed within one game
`
`display screen, it is also possible to generate a combo exhibiting the effect beyond
`
`the effects of these cards.” Ex. 1001, at 10:17-20.
`
`
`
`9
`
`

`

`B. The Claims Recite the Solution Described in the Specification.
`
`The claims of the ’659 patent are ordered in a logical progression based on
`
`the game mechanics and features of the graphical user interface that is disclosed in
`
`the specification and summarized above. For example, independent claim 1 recites
`
`the graphical user-interface element of panels and describes how those panels are
`
`physically selected by a first user. Ex. 1001, at 10:31-35. The claim proceeds to
`
`recite that the selected panels specifically indicate characters. Ex. 1001, at 10:31-
`
`35. Next, claim 1 describes how the game display region is subdivided into
`
`divisions, and selected panels are disposed within those divisions in the game
`
`display region based on the received selection. Ex. 1001, at 10:33-38; see also
`
`9:18-20 (“battle result is preferably determined based on the panel information at a
`
`stage where the panels are disposed”).
`
`Claim 1 further describes how these mechanics are executed in an iteration
`
`of game play where an individual panel is selected and disposed in a division of the
`
`game display region, and displayed as an animation. The screen display control
`
`function recited in claim 1 displays the “game display screen on a screen display
`
`unit,” and is further limited by the recitation of “information regarding the layout
`
`by the panel layout function and layout of the panel in the divisions by the second
`
`user”—i.e., the first and second users’ selection and layout of panels in the
`
`divisions. Ex. 1001, at 10:39-43. The screen display control function further
`
`10
`
`

`

`includes a “wherein” clause that describes a sequence of the progression of the
`
`claimed game interface. Ex. 1001, at 10:44-50. First, the panel layout function
`
`disposes the panel selected by the first user in the target division selected by the
`
`user, or receives an instruction that a panel is disposed in the target division when
`
`it was allowed to be disposed there. Ex. 1001, at 10:44-48. Next, the panel
`
`indicating the character is displayed as an animation when it is disposed. Ex. 1001,
`
`at 10:49-50; see also 8:46-48 (“these panels display a movie when the panels are
`
`emphasized and displayed. The movie is an animation that displays a plurality of
`
`still images consecutively.”)
`
`Claim 1 and the other independent claims thus establish a framework for the
`
`basic display and progression of the game, culminating in the disposition of a panel
`
`in a division of the game display region and that panel’s display of an animation,
`
`where the “battle information is preferably determined based on the panel
`
`information at a stage where the panels are disposed.” Ex. 1001, at 9:18-20.
`
`According to the ’659 patent, as a result of this panel-based interface and
`
`gameplay, and the display of an animation with the disposed panel, “the visual
`
`effect that the user receives is greatly improved compared to known games.” Ex.
`
`1001, at 7:54-55.
`
`The following table demonstrates how the specific elements recited in claim
`
`1 embody the illustrative disclosure in the specification of the ‘659 patent.
`
`11
`
`

`

`Illustrative Disclosure
`“[A] game program and a game
`processing method of a game in which a
`plurality of characters battle against
`each other.” Ex. 1001, at 1:23-25.
`
`Claim Elements
`1. A non-transitory computer readable
`recording medium storing game
`program code instructions for a game
`in which a first user and a second user
`do battle, and when the game program
`code instructions are executed by a
`computer, the game program code
`instructions cause the computer to
`perform:
`[1a] a panel selection function of
`receiving a selection by the first user,
`the selection being for one or more
`panels indicating characters to be
`disposed in one or more divisions of a
`game display screen including a
`display region formed by the
`divisions;
`
`
`“Using the panel selection function,
`panels to be disposed in frames of the
`game display screen including a battle
`display region formed by one or more
`frames are selected….” Ex. 1001, at
`5:41-43.
`
`“…the information processing apparatus
`200 can include an input receiving unit
`that receives an input to give an
`instruction to the control unit.” Ex.
`1001, at 7:10-13.
`“Using the panel layout function, the
`panels selected by the 40 panel selection
`function are disposed in the frames.”
`Ex. 1001, at 4:39-41
`“Using the screen display control
`function, the game display screen is
`displayed on a screen display unit
`(STEP 140). The screen display unit
`receives a signal output from a screen
`display control section of an
`information processing apparatus,
`which will be described later. For
`example, a display device provided in a
`user terminal can be used. In addition, it
`is possible to use a touch panel type
`display that also serves as an input
`unit…” Ex. 1001, at 5:53-60.
`[1d] the panel layout function disposes “[A] panel layout section 223 that
`
`[1b] a panel layout function of
`disposing the panels in the divisions
`on the basis of the selection received
`by the panel selection function; and
`[1c] a screen display control function
`of controlling the game display screen
`on a screen display unit on the basis of
`information regarding the layout by
`the panel layout function and layout of
`the panel in the divisions by the
`second user, wherein
`
`
`12
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`

`

`the panel received by the panel
`selection function in a target division
`or receives an instruction that the
`panel is disposed in the target division,
`when the panel is allowed to be
`disposed in the target division, and
`
`
`[1e] the panel indicating the character
`is displayed as an animation when
`being disposed in the target division.
`
`
`
`
`disposes the panels selected by the
`panel selection section 222 in the
`frames” Ex. 1001, at 5:52-54.
`
`“Panels selected from the first panel
`group configured to include a plurality
`of panels that the first character
`possesses and the second panel group
`configured to include a plurality of
`panels that the second character
`possesses are disposed in the frames A
`to G.” Ex. 1001, at 6:28-32.
`
`“In the example shown in FIG. 3, panels
`selected from the first panel group are
`disposed in the frames A, B, D, and F,
`and panels selected from the second
`panel group are disposed in the frames
`C, E, and G.” Ex. 1001, at 6:32-35.
`
`“…the information processing apparatus
`200 can include an input receiving unit
`that receives an input to give an
`instruction to the control unit.” Ex.
`1001, at 7:10-13.
`
`“Preferably, these panels display a
`movie when the panels are emphasized
`and displayed. The movie is an
`animation that displays a plurality of
`still images consecutively.” Ex. 1001, at
`8:46-48.
`
`Once the game field is set through the progression of claim 1’s mechanics,
`
`the dependent claims further recite the mechanics of executing the game and
`
`particular visual effects provided through the interface. For example, once the
`
`13
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`

`

`panels are disposed, the battle progresses further when the game is executed in
`
`dependent claim 2, which recites “executing the divisions in which the panels are
`
`disposed by the panel layout function in predetermined order.” Ex. 1001, claim 2;
`
`see also 7:47-49 (“The battle proceeds by executing the frames A to G in order”).
`
`Claim 3 recites how that order may be determined, through the “arrangement,
`
`shapes, and/or sizes of the panels.” Ex. 1001, claim 3; see also 8:10-11 (“In the
`
`vertically long frames such as the frames J and N, their actions are first performed
`
`in the previous turn”). These and the remaining dependent claims thus recite game
`
`mechanics that describe the progression of the battle and/or provide for visual
`
`effects through the graphical user interface in conjunction with the battle
`
`progression. See, e.g., Ex. 1001, claim 11 (reciting frame portions of divisions in
`
`which panels are disposed constructed of different colors).
`
`III. The Alleged Grounds of Invalidity Lack Evidentiary Support.
`For the reasons explained below, the petition fails to meet its burden.
`
`Petitioner has provided absolutely no relevant evidence in support of any of the
`
`three challenges under § 101 and § 112 raised in the petition—and mere attorney
`
`argument is insufficient for Petitioner to carry its burden. See, e.g., Icon Health &
`
`Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney
`
`argument is not evidence” and cannot rebut other admitted evidence.); Suffolk
`
`Techs., LLC v. AOL Inc., 752 F.3d 1358, 1367 (Fed. Cir. 2014) (“Without expert
`
`14
`
`

`

`testimony, however, Suffolk’s position is mere attorney argument. And here, those
`
`attorney arguments are insufficient to undermine the credible testimony from
`
`Google’s expert” as to a question of fact). The Federal Circuit has emphasized that
`
`attorney argument simply cannot take the place of nor rebut properly admitted
`
`evidence in proceedings like this. See, e.g., Elbit Sys. of Am., LLC v. Thales
`
`Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“[Petitioner] fails to present
`
`any evidence supporting this contention beyond attorney argument, … and
`
`‘[a]ttorney argument is not evidence’ and cannot rebut other admitted evidence.”);
`
`see Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284–85 (Fed.
`
`Cir. 2017) (finding it “reasonable” for Board to accept admitted expert testimony
`
`“over [] bare attorney argument”). And the Board has similarly found that attorney
`
`argument is no substitute for properly admitted evidence. See, e.g., Teoxane S.A. v.
`
`Allergan, PLC, IPR2017-01906, Paper 15 at 29 (PTAB Mar. 9, 2018) (“We deny
`
`this ground because it is based on bare attorney argument, which cannot take the
`
`place of evidence lacking in the record.”); see L’oreal USA, Inc. v. Liqwd, Inc.,
`
`PGR2017-00012, Paper 17 at 17 (PTAB July 19, 2017) (“[N]either exhibit is more
`
`than mere attorney argument, which is not evidence.”).
`
`Petitioner offers no expert testimony, but primarily cites the Background of
`
`the patent for alleged evidentiary support. But Petitioner never provides any
`
`rationale or explanation for how the mere mention of games developed in “recent
`
`15
`
`

`

`years” therein somehow qualifies as admitted prior art, much less as support for the
`
`proposition that the mentioned card games are routine, conventional, or well-
`
`understood. As a result, Petitioner has failed to show that it is more likely than not
`
`that any of the challenged claims is unpatentable. 35 U.S.C. § 324(a). Petitioner’s
`
`alleged grounds of invalidity also fail on the merits because they fail to address all
`
`of the limitations of the claims, ignore the disclosure of the specification of the
`
`’659 patent, and fail to analyze the claims from the perspective of one of ordinary
`
`skill in the art.
`
`The only evidence in the record of how a skilled artisan would have
`
`understood the disclosure and claims of the ’659 patent is the testimony of Mr.
`
`Crane. Mr. Crane testified that the use of panels as described and claimed in the
`
`’659 patent is not well-understood, routine, or conventional. Ex. 2002 ¶¶ 22-33.
`
`Furthermore, Mr. Crane explained how the claims meet the written description
`
`requirement and are sufficiently definite to a skilled artisan. Ex. 2002 ¶¶ 34-58.
`
`This testimony is credible and unrebutted, and thus the petition cannot meet its
`
`burden.
`
`IV. The Challenged Claims are Eligible Under § 101.
`A. Legal Standard for Invalidity Under § 101.
`
`A patent may be obtained for “any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`16
`
`

`

`thereof.” 35 U.S.C. § 101. However, the Supreme Court has “held that this
`
`provision contains an important implicit exception: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347, 2354 (2014). The “concern that drives this exclusionary
`
`principle as one of pre-emption,” but “we tread carefully in construing this
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`exclusionary principle lest it swallow all of patent law.” Id.
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`Under the framework set forth in Alice, one must first “determine whether
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`the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at
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`2355. “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If the claims are directed to a patent-
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`ineligible concept, one must next “consider the elements of each claim individually
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`and ‘as an ordered combination’ to determine whether the additional elements
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`‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355
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`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
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`1297 (2012)).
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`Step two is an inquiry as to whether the claims add an inventive concept that
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`is sufficient to ensure the patent amounts to more than a patent upon the concept
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`itself. Alice, 134 S. Ct. at 2355. “In applying the § 101 exception, th[e] Court
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`must distinguish patents that claim the building blocks of human ingenuity, which
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`are ineligible for patent protection, from those that integrate the building blocks
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`17
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`

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`into something more.” Id. at 2350. Claims reciting “well-understood, routine,
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`conventional activity” in the field of art are insufficient to confer patentability to
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`otherwise ineligible concepts. Mayo, 566 U.S. at 79. “The question of whether a
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`claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact.”
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`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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`B. The Claims are Subject-Matter Eligible.
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`The claims of the ’659 patent are subject-matter eligible. First, the game-
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`processing method using the “panels” and mechanics disclosed in the ’659 patent
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`is not an “abstract idea.” Petitioner’s conclusory statements to the contrary should
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`be rejected. Second, even if the analysis proceeded to step two of the Alice
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`framework, the ’659 patent claims are directed to a specific application of a battle
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`game through the use of “panels” that was not well-understood, routine, or
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`conventional.
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`1. The ’659 patent is not directed to an abstract idea.
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`The first step of the Alice framework is to “determine whether the claims at
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`issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
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`According to Petitioner, the alleged abstract concept of the ’659 patent is
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`“controlling the display of a video game based on received selection of panel
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`information.” Pet. 13, 24. Patent Owner disagrees with Petitioner’s oversimplified
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`18
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`characterization of the invention disclosed in the ’659 patent. But even if that
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`characterization were accurate, the concept Petitioner has articulated is anything
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`but abstract, and Petitioner has failed to prove otherwise.
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`First, the claims are directed to more than the mere display of information—
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`the challenged claims are directed to both the mechanics and progression of the
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`battle game itself and the graphical user-interface improvements to the display of
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`such a game. As explained above in Section II, the independent claims introduce
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`panels consisting of stored data indicating characters and graphical user-interface
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`elements. They recite a structured display interface in which the panels may be
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`displayed. And they further limit the steps by which a panel is selected by a user, is
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`allowed to be disposed in the subdivided game display region, and is then disposed
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`and displays an animation to provide an improved visual effect to the user. The
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`dependent claims further delineate how the panels are executed (in a predetermined
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`order), how the order of panel execution may be determined (by arrangement, size,
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`and/or shape), how the display region is divided (by turns), and so forth. These
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`limitations are more than the mere display of information—they are game
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`mechanics with corresponding visual elements that impact how the battle game
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`progresses and how it is displayed.
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`Second, the concept Petitioner allegedly identifies as the abstract idea to
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`which the claims are directed does not fall within any of the categories set forth by
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`19
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`precedent. This alleged abstract idea is not a purely mathematical concept, a
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`method of organizing human activity, a purely mental process, or a fundamental
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`economic practice, and Petitioner fails to provide any evidence or argument to the
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`contrary. Similarly, the Board declined to find in its Decision to Institute that the
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`challenged claims were directed to any of the above abstract ideas. See Paper 17,
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`at 6 (noting that fundamental economic practices, mathematical formulas, and
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`basic tools of scientific and technological work exist on the patent-ineligible side
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`of the spectrum, but declining to characterize the challenged claims as such).
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`“In addressing the first step of the section 101 inquiry, as applied to a
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`computer-implemented invention, it is often helpful to ask whether the claims are
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`directed to ‘an improvement in the functioning of a computer,’ or merely ‘adding
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`conventional computer components to well-known business practices.’” Affinity
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`Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016)
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`(quoting Enfish, 822 F.3d at 1337). Petitioner has failed to argue or present
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`evidence that the challenged claims are directed to a well-known business practice.
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`In the case of the ’659 patent, the claims address a problem associated with a
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`particular type of card game developed in recent years for electronic devices: “the
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`use of a two-dimensional card in